Tag: Domain Name Dispute Resolution

What happens when a big multinational company discover that it’s trademark name is being used in a fraudulent way by another business? Should legal action be taken in order to protect its brand?

This occurred some months ago, in April 2015, when a very well-known fashion brand sued an Indian Tapas Restaurant for Trademark infringement. The fashion brand in question was the internationally renowned fashion retailer, Zara and the parties involved were Inditex Group, the Spanish company that owns the famous clothing brand ZARA, and the Chennai based restaurant, “Zara Tapas Bar”.

It could look like Inditex was taking advantage of its position as a multinational giant in order to create a monopoly over the Trademark term. However, this couldn’t be further from the truth. A brand name is one of the most important intangible assets that a company owns, and should be protected against any action that may discredit it.

This is also the view of the Delhi High Court who ruled in favour of the clothing brand, ordering the restaurant to change its name. The defendant’s main argument was not successful: they claimed that, considering that both companies functioned in different areas of service, it was unlikely that it would cause any confusion amongst potential clients. And, even if this argument could have been valid in any other scenario, the Court Members concluded that the defendants wanted to benefit from the reputation and goodwill of the plaintiff.

The 2 main factors that the Court took into consideration when siding with the Spanish multinational were:

The nature of use of the mark. The Defendant claimed that they were not using the mark ZARA per se, but “Zara Tapas Bar”. However, as its website and pages of social networking showed, it was mostly promoting the brand with emphasis on Zara rather the entire mark Zara Tapas Bar. Moreover, the Defendant associated itself with Spanish products (Tapas), where the plaintiff’s brand originates from. Clearly, leveraging the brand equity built up by Zara (the fashion brand) was demonstrated.

The mark becoming Publici Juris (of public right). The Defendants argued that the mark had became common property and even provided a list of marks containing the name Zara. However, the Court stated that it is the choice of the plaintiff to take legal actions against infringers if they perceive it necessary.

So Trademark infringements can be found between companies operating in different industries, even if, as we have seen, neither them nor their goods and/or services, present any similarities at all. To avoid confusion and future problems it is always recommended to count on a good domain management strategy from the very beginning.

In conclusion, what does this mean for brand owners? Monitoring keywords pertaining to your brand is essential in today’s digital age. Investing a little will save a lot in the long run. Proactively enforcing a brand protection strategy is crucial when protecting your brand and digital assets.

Domain names are invaluable digital assets in todays world. Over the last few months, dotNice have been following the epic saga between Lucasfilm (now owned by Disney) and an established online retailer of fancy dress attire, Abscissa. The story begins over a decade ago when Abscissa registered various domain names including starwars.co.uk to attract online consumers searching for star wars paraphernalia and product goods to it’s webpage. Over the course of ten years, the online retailer used the domain to sell Star Wars related fancy dress attire. The common term given to such behaviour is domain-squatting or cyber-squatting which describes the act of registering or trafficking in a web address with bad faith intent to profit from another party’s trademark. Over the course of July this year, Lucasfilm (Disney) litigators pursued Abscissa to enforce their IP rights and were successful in their endeavours. Following the ruling of Nominet (the UK’s domain name registry) six different domain names, originally registered by the third party, were recovered by Disney and added to their existing portfolio of digital assets. Domain disputes like the debacle are in no way a recent phenomenon.

Although a domain name can easily be registered at a relatively minimal cost today, the terms of what constitutes infringement or intellectual property violation can be a little more complicated.
In order to successfully recover a domain name from a third party, the following conditions must clearly proven:

1. the complainant must have a trademark registered (related to the domain in question).

2. the defendant’s registration must be deemed as ‘abusive’ of the complainants rights or infringe on it’s proven intellectual property. In other words, it must be proven that the defendant registered the domain in bad faith for the purpose of leveraging another trademark owners brand equity.

What can brands do to prevent such cases of cyber-squatting?

– ensure you have your marks registered in all countries you operate in internationally

– Invest in building your domain name portfolio to avoid opportunistic domain squatters registering domains similar to your brand

– monitor keywords related to your brand and domain names to ensure you are aware of any dubious domain registrations

– Take swift action once infringement or ip violation has been identified.

Disney’s determined enforcement of their intellectual property rights should be emulated by all brands with an online presence. Failing to establish an effect digital brand protection strategy will ultimately negatively impact on a businesses bottom line.

LML Investments, owner of Country Girl branded clothing sold at CountryGirlStore.com, has been admonished by a panel for abusing the Uniform Domain Name Dispute Resolution Policy (UDRP).
The company filed a cybersquatting complaint against PA Gordon, owner of CountryGirl.com. The case was filed despite Gordon having owned the domain name since well before LML Investments claims any trademark rights in the “Country Girl” mark.
A three person National Arbitration Forum panel determined that LML Investments did not make even a prima facie case in support of its arguments that Gordon lacked rights and legitimate interests in the domain name. It was also unable to prove he registered the domain in bad faith, given that he registered it before the trademark rights.
The panel wrote:
The Panel finds that Complainant and its counsel have acted inappropriately and in reverse domain name hijacking by initiating this dispute and continuing with it following the delivery of the Response by Respondent. Complainant is attempting to deprive Respondent, the rightful, registered holder of the disputed domain name, of its rights to use the disputed domain name. Complainant and its counsel should have known that they would be unable to prove at least two of the elements needed to prevail. Even a cursory review of the URDP and UDRP decisions would have alerted Complainant and its counsel to the fact that its case was devoid of merit.

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